Intellectual Property The Hard Way, Part IV: Early IP Disclosure

As part of our series on Intellectual Property (IP), I am now hearing from around the world. In this installment, Christopher Heer, an intellectual property lawyer from Canada, shares a cautionary tale and some advice around prioritizing patent applications. Christopher is a registered patent agent, registered trademark agent, and principal at Heer Law. He is designated by the Law Society of Ontario as a certified specialist in patent law.

I am originally Canadian and know that many companies wish to access the market below the border because it’s roughly ten times the size of Canada. With start-ups, often there is a rush to show off products to potential investors or customers and patent planning does not happen.

Mary Juetten: Please tell us more about this Canadian start-up story and the pitfalls around early disclosure.

Christopher Heer: We recently saw an apparel start-up with a terrific product. But a little more than six months into their business, they were already in an unfortunate situation with respect to building their patent portfolio. At the time they contacted us, their actions in the preceding six months included:

Disclosure of their new, potentially patentable (in terms of utility and design patents) apparel product on Kickstarter five months ago on the 15thof the month; and

Filing a United States provisional patent application for the product two days later on the 17th.

They contacted us on the understanding given to them by their previous patent agent that they could file a formal United States design patent application within six months of filing their provisional patent application.

Juetten: Why worry about filing a provisional patent application first before disclosing your product to others?

Heer: You must file your patent application before disclosing your invention to the public because some countries or regions require absolute novelty at the time of filing a utility patent application or design application, subject to a valid claim to a right of priority from an earlier application.

In this case, the prior disclosure on Kickstarter likely precluded the apparel start-up from validly obtaining protection for their product in large markets, such as China for design, utility model and invention patent protection, and Europe for patent protection.

Juetten: It seems like perhaps the company thought that provisional applications worked for all types of patents; design (non-functional) and utility (functional) patents alike.

Heer: Yes, the mistake was not understanding what priority rights a provisional application creates because utility and design are different:

A US provisional patent application can serve as a priority document entitling you to an earlier priority or claim date in later-filed regular or non-provisional utility patent applications directed to the same subject matter or invention described in the provisional application.

A US provisional patent application cannot serve as a priority document for a U.S. design patent application. Similarly, a U.S. provisional patent application cannot serve as a priority document for a foreign design or industrial design application (which are the corresponding rights to U.S. design patents abroad).

Juetten: How could this have been avoided?

Heer: Even if this start-up had filed their U.S. provisional patent application a few days before the public disclosure on Kickstarter, it could not have been relied on in later applications to obtain design protection. It would have been valid only for utility patent protection.

And although this start-up has a shot at a utility patent given their product’s particular functional design, as an apparel company, design patents are likely to be a key type of IP protection for them. This first experience with the patent system will be one they learn from.

Juetten: Yes, this shows the importance of both not assuming and seeking advice early on.

Heer: Despite what happened, all was not lost. The United States and Canada (and some other jurisdictions) provide one-year grace periods on public disclosures originating from the inventor or applicant. So, thankfully, the apparel start-up is still able to pursue patent and design protection in their primary initial markets.

I would like to reiterate that patents are an area where you should not go it alone. Spending some money on professional advice up front can avoid costly errors or even loss of patent protection. Please reach out @maryjuetten on Twitter if you have a story to tell, whether you are the founder or the attorney. #onwards.

I am the founder and CEO of Traklight, the only self-guided software platform that creates your custom intellectual property (IP) strategy and assesses business risk. I dedicated my more-than-30-year career to helping businesses achieve and protect their success, specializin...